Comcast Cable Communications LLC v. Rovi Guides Inc

1. Case Identification

• Case #: IPR2019-01415
• Patent #: 9,232,254
• Filed: August 2, 2019
• Petitioner(s): Comcast Cable Communications, LLC
• Patent Owner(s): Rovi Guides, Inc.
• Challenged Claims: 1-22

2. Patent Overview

• Title: Client-Server Based Interactive Television Guide With Server Recording
• Brief Description: The ’254 patent describes a method and system for providing users with access to directories of user-recorded programs through an interactive program guide. The system allows users to direct a remote server to record programs, which are then stored at the server and can be played back to the user on demand.

3. Grounds for Unpatentability

Ground 1: Claims 1-2, 6-8, 11-13, 17-19, and 22 are obvious over Horigami in view of Schein.

• Prior Art Relied Upon: Horigami (Japanese Application # H8-56352) and Schein (Patent 6,388,714).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Horigami taught most elements of the independent claims, including a distributed system with shared video recording devices on a network that record content from broadcast sources in response to user requests. Horigami’s system included remote servers and multiple user equipment on distinct networks. However, Petitioner contended Horigami did not explicitly teach maintaining a "user directory for each user" or enabling access to that directory via a program guide. Schein allegedly supplied these missing elements by teaching customizable, user-specific program guides maintained on a remote server, which can be sorted based on individual user preferences to create tailored content lists. The combination of Horigami’s remote recording architecture with Schein’s user-specific guide functionality was asserted to render the claims of independent claims 1 and 12 obvious.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Horigami and Schein for several reasons: (1) to improve the user experience by providing tailored lists of recorded content and enhancing organizational granularity; (2) to prevent users from indiscriminately accessing recordings requested by other users, a goal mentioned in Horigami; and (3) to address market trends requiring better organization of the dramatically increasing amount of available programming.
  • Expectation of Success: A POSITA would have a reasonable expectation of success because the combination involved applying a known technique (Schein’s user-specific sorting) to a known system (Horigami’s remote recording system) to yield predictable results. The modification would require only minor software changes to implement user-specific data structures.

Ground 2: Claims 9-10, 20-21 are obvious over Horigami in view of Schein and Dunn.

• Prior Art Relied Upon: Horigami (Japanese Application # H8-56352), Schein (Patent 6,388,714), and Dunn (Patent 5,861,906).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the Horigami-Schein combination by adding Dunn to teach the specific directory structures recited in dependent claims 9, 10, 20, and 21. Petitioner argued that while the primary combination taught user-specific directories, Dunn taught the specific implementation of using pointers to link entries in a user directory to a program’s location in a central media directory. Dunn described a cross-referenced data system with multiple tables (a program table and a join table) that point to each other to efficiently correlate user IDs with program IDs and storage locations (monikers).
  • Motivation to Combine: A POSITA would incorporate Dunn’s list structure into the Horigami-Schein system to implement an efficient method for tracking and identifying programs recorded for respective users. Dunn’s structure was described as "easily and quickly searched," which would be a known technique to improve the performance of the combined system. This would be a mere substitution of one known table structure (Horigami's simple list) for another, more efficient known table structure (Dunn's join table).
  • Expectation of Success: A POSITA would have expected success, as modifying data structures to improve search efficiency was a common practice and would require minor software adaptations well within the skill of a programmer at the time.

Ground 3: Claims 3-5, 14-16 are obvious over Horigami in view of Schein and Forecast.

• Prior Art Relied Upon: Horigami (Japanese Application # H8-56352), Schein (Patent 6,388,714), and Forecast (Patent 6,230,200).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground added Forecast to the Horigami-Schein combination to teach the deletion features of dependent claims 3-5 and 14-16. While Horigami mentioned erasing a video file reference, Forecast explicitly taught a "delete command" that could be received from an authorized client to delete all copies of a specified clip from the video file server by removing references from the clip directory. Forecast also taught managing deletion conflicts, such as not erasing a file for one client while it is being streamed to another, which mapped to the claim limitation of deleting a program only if a single user has requested it.
  • Motivation to Combine: A POSITA would integrate Forecast's deletion functionality into the Horigami-Schein system as a known technique to improve a similar device. Both systems involved remote servers for storing video, and adding a deletion feature was a necessary and welcome improvement for content and storage management, given finite recording capabilities.
  • Expectation of Success: The combination was a straightforward application of a known feature (deletion) to a known system to improve its functionality. A POSITA would have expected success in implementing this feature, as it addressed a common need in data storage systems.

4. Key Claim Construction Positions

• "user directory": Petitioner proposed this term be construed as "a list that is specific to a user." This construction was central to the argument that Schein’s user-customized program guides met the claim limitation, distinguishing them from the device-specific lists in Horigami.
• "processing circuitry": Petitioner argued this term required no construction but, if construed, should not be treated as a means-plus-function term. Petitioner asserted that the prior art taught the claimed functions under either interpretation.
• "network": Petitioner proposed construing this term broadly as "an interconnected or interrelated group of nodes, including devices," consistent with its general use in the patent.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the grounds presented were not redundant or cumulative to those considered during prosecution. It was asserted that the examiner’s rejections relied on unwieldy combinations of four or five references and did not start with Horigami, which Petitioner framed as a superior primary reference disclosing most of the claimed features. The petition contended that its straightforward two- and three-reference combinations, supported by expert testimony, presented a stronger, materially different case for unpatentability that warranted consideration.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-22 of the ’254 patent as unpatentable.